The prolific non-practicing entity EMG Technology LLC has enjoyed great success asserting a patent on mobile website technology. But after six years of lawsuits, EMG’s patent is now on life support following a rare pretrial defense win in the Eastern District of Texas.
In a summary judgment ruling issued on Tuesday, U.S. District Judge Michael Schneider in Tyler, Tx., ruled that AutoZone Inc. and J.C. Penney Corporation Inc. don’t infringe EMG’s patent under a theory known as the doctrine of equivalents. EMG can still claim so-called literal infringement, but Schneider wrote that EMG needs to submit a status report explaining why pursuing that theory wouldn’t be frivolous under his order, suggesting he doesn’t think highly of EMG’s odds. (Here’s a breakdown of the difference between literal infringement and infringement under the doctrine of equivalents.)
We wouldn’t have predicted this pre-trial victory. One researcher found that less than 10 percent of summary judgment motions filed by defendants are granted in the Eastern District of Texas, compared to about 40 percent nationwide. That may help to explain why more than 60 companies, including Apple Inc. and Microsoft Corp., have reached confidential settlements with EMG. (To be fair, EMG’s patent has so far survived reexamination proceedings at the U.S. Patent and Trademark Office, so the defendants had reason to fear it.)
Schneider’s ruling came about a month before a scheduled trial. J.C. Penney and AutoZone were the only defendants remaining in a consolidated case that once included nine defendants.
AutoZone is represented by Terry Clark and John Golwen of Bass Berry & Sims. Alan Fisch of Fisch Sigler represents J.C. Penney. EMG is represented by attorneys at Jeffer Mangels Butler & Mitchell.
Fisch declined to comment. EMG counsel Gregory Cordrey of Jeffer Mangels didn’t immediately respond to a request for comment.